The Virginia Business Litigation Blog
Midwestern Pet Foods, Inc. (Midwestern) applied for a trademark on its dog treat product, WAGGIN’ STRIPS. The Societe des Produits Nestle S.A. (Nestle), which holds the trademark on a similar dog treat, BEGGIN’ STRIPS, challenged the application, claiming Midwestern’s proposed mark would infringe on its mark. The Trademark Trial and Appeal Board found Nestle failed to prove its BEGGIN’ STRIPS mark was famous enough that the WAGGIN’ STRIPS mark would dilute it. But it found the proposed WAGGIN’ STRIPS mark would likely confuse consumers because “the goods are identical, the channels of trade and classes of purchasers are the same, and the marks are similar in appearance, sound, connotation and commercial impression.” It denied the application.
Midwestern appealed on several bases. It argued that Nestle should not have been allowed to introduce evidence of the BEGGIN’ STRIPS mark’s fame that postdated the WAGGIN’ STRIP’s application because such evidence must predate an applicant’s filing date to be used to analyze the likelihood of confusion. The Federal Circuit rejected this assertion as a misreading of the law.
Though not relevant to the question of dilution, evidence of post-application fame is relevant when considering likelihood of confusion. To show dilution, Nestle had to show its mark was famous before Midwestern filed its intent-to-use application. Failing that, however, Nestle could still use evidence of the BEGGIN’ STRIPS mark’s strength in showing likelihood of confusion, even if that strength (fame) occurred later.
Midwestern further argued the Board erred in finding the two marks confusingly similar. The Board considered Nestle’s mark’s fame, the similarity of the products, the trade channels through which the products would be sold, the conditions of sale, the marks’ similarities, and Midwestern’s intent.
The Board found BEGGIN’ STRIPS was not a famous mark and thus was not entitled to the broadest protection available. But it found the mark held “at least a high degree of recognition” that has made it “distinctive and strong and entitled to a broad level of protection” that placed it within likelihood-of-confusion fame. The mark had been in continuous use since 1988. The products bearing the mark had been sold, marketed and advertised nationwide. And Nestle had expended substantial money on advertising in various media which contributed to its sales.
The Board found Midwestern’s claimed distinctions between the marks unconvincing. Both had the same format, structure and syntax. Both had two words with the identical second word. And both first words ended with GGIN’. Further, the verbs in the first syllable of each words have single syllables. The marks have similar pronunciations, cadences and intonations. And “wag” and “beg” describe excited dog behavior at feeding time.
The Board found the marks would be used with identical products and the dog treats would be sold in the same channels of trade and to the same consumers. The products were relatively inexpensive so consumers would likely not take great care in making their purchasing selections. And the marks were sufficiently similar in overall commercial impression that consumer confusion was likely.
The Federal Circuit affirmed the Board’s finding of likelihood of confusion as supported by the evidence. This case demonstrates many of the conditions that must be present for likelihood of confusion to apply, conditions that were absent in the Wag’N Enterprises case I covered two months ago in this blog. The Wag’N and RedRover marks shared no identical words, were not similar in their meanings, and the companies used dissimilar logos. They were also used on very different products and Wag’N’s trademark did not have the commercial strength occasioned by substantial advertising like BEGGIN’ STRIPS.